throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: October 12, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`KOSS CORPORATION,
`Patent Owner.
`
`IPR2021-00686
`Patent 10,491,982 B2
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2021-00686
`Patent 10,491,982 B2
`
`
`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 6–13 of U.S. Patent No. 10,491,982 (Ex. 1001, “the ’982
`patent”). Paper 2 (“Pet.”). Koss Corporation (“Patent Owner”) filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”).
`This is the second inter partes review between these same parties
`challenging claims of the ’982 patent. In IPR2021-00381 (“’381 IPR”) we
`instituted trial on claims 1–5 and 14–20. ’381 IPR, Paper 15. Petitioner
`filed a “Notice Ranking Petitions and Explaining Material Differences
`Between Petitions Against U.S. Patent No. 10,206,025.” Paper 3,
`(“Ranking Notice”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons explained below, we decline to institute an inter partes review of
`the ’982 patent pursuant this Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner states it is the real party-in-interest. Pet. 85. Patent Owner
`states it is the real party in interest. Paper 4 (“Mandatory Notice by Patent
`Owner”), 1; see also Paper 6 (Updates to Mandatory Notice).
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`IPR2021-00686
`Patent 10,491,982 B2
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`
`B. Related Matters
`Both parties list the related lawsuit alleging infringement of the ’982
`patent, Koss Corporation v. Apple Inc., Case No. 6:20-cv-00665 (W.D.
`Tex.) (“District Court” or “District Court Lawsuit”). Pet. 86. Patent Owner
`lists the District Court Lawsuit and other lawsuits involving the ’982 patent,
`United States applications to which the ’982 patent claims priority, and
`pending inter partes reviews as Related Matters. Prelim. Resp. 2, 6.
`1. Other Lawsuits
`Patent Owner identifies five other lawsuits involving the ’982 patent:
`Koss Corporation v. PEAG LLC d/b/a JLab Audio, Case No. 6:20-cv-00662
`(W.D. Tex.); Koss Corporation v. Skullcandy, Inc., Case No. 6:20-cv-00664
`(W.D. Tex);1 Apple Inc. v. Koss Corporation, Case No. 4:20-cv-05504
`(N.D. Cal.); Koss Corporation v. Apple Inc., Case No. 6-20-cv-00665
`(W.D. Tex.); and Koss Corporation v. Skullcandy, Inc., Case No. 2:21-cv-
`00203 (D. Utah). Paper 6, 1.
`2. United States Applications
`Patent Owner states the ’982 patent claims priority to PCT
`application No. PCT/US2009/039754, filed April 7, 2009 (the “PCT
`Application”) and provisional application Serial No. 61/123,265 filed April
`8, 2008 (the “Provisional Application”). Paper 4, 1.
`
`
`1 We understand this case was transferred to the District of Utah. See Bose
`Corporation v. Koss Corporation, IPR2021-00297, Paper 16, at 11 (PTAB
`June 3, 2021).
`
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`IPR2021-00686
`Patent 10,491,982 B2
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`
`3. Inter Partes Review Proceedings
`Patent Owner lists the following inter partes review proceedings2
`challenging patents that claim priority to the PCT Application and the
`Provisional Application:
`Bose Corporation v. Koss Corporation, IPR2021-00297, filed
`December 7, 2020, challenging US Patent 10,368,155 B2;
`Apple Inc. v. Koss Corporation, IPR2021-00305, filed December 15,
`2020, challenging US Patent 10,506,325 B1;
`Apple Inc. v. Koss Corporation, IPR2021-00546, filed February 22,
`2021, challenging US Patent 10,206,025 B2;
` Apple Inc. v. Koss Corporation, IPR2021-00592, filed March 2,
`2021, challenging US Patent 10,469,934 B2;
`Apple Inc. v. Koss Corporation, IPR2021-00612, filed March 3,
`2021, challenging U.S. Patent 10,206,025;
`Apple Inc. v. Koss Corporation, IPR2021-00626, filed March 17,
`2021, challenging US Patent 10,206,025 B2;
`Bose Corporation v. Koss Corporation, IPR2021-00680, filed March
`17, 2021, challenging US Patent 10,469,934 B2;
`Apple Inc. v. Koss Corporation, IPR2021-00679, filed March 22,
`2021, challenging US Patent 10,506,325 B1; and
`Apple Inc. v. Koss Corporation, IPR2021-00693, filed March 23,
`2021, challenging US Patent 10,469,934 B2.
`Paper 4. 1–2.
`
`
`2 We separately note the following pending between these same partes:
`Apple Inc. v. Koss Corporation, IPR2021-00255, filed November 25, 2020;
`and Apple Inc. v. Koss Corporation, IPR2021-00600, filed March 7, 2021,
`both challenging US Patent 10,298,451 B1.
`
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`IPR2021-00686
`Patent 10,491,982 B2
`
`
`C. The ’982 Patent
`The application for the ’982 patent’s earliest priority dates are April
`7, 2009, to the PCT Application and April 8, 2008, to the Provisional
`Application. Ex. 1001, codes (60), (63).
`1. Background Technology
`The ’982 patent explains that wired headphones interconnecting
`headphones and a data storage unit are and “cumbersome.” Ex. 1001, 1:56–
`59. “Recently, cordless headphones that connect wirelessly via IEEE
`802.11, e.g., via Bluetooth connection, to a laptop or personal computer but
`“such headphones are also quite large and not in-ear type phones.” Id. at
`1:66–2:4; see also Ex. 1003 ¶ 11 (describing Bluetooth as a wireless
`communication employing IEEE 802.11 (WiFi) and IEEE 802.15).
`2. The ’982 Patent’s Wireless Earphones
`The ’982 patent describes and claims “a wireless earphone that
`receives streaming audio data via ad hoc wireless networks and
`infrastructure wireless networks, and that transitions seamlessly between
`wireless networks.” Ex. 1001, 2:64–66. The ’982 patent defines “ad hoc
`wireless network” as “a network where two . . . wireless-capable devices,
`such as the earphone and a data source, communicate directly and
`wirelessly, without using an access point.” Id. at 3:8–14. Two discrete
`wireless earphones are described, each having a body and an “ear canal
`portion for insertion into the canal of the user of the earphone.” Id. at 3:25–
`27, 3:54–56.
`Figure 2A of the ’982 patent is reproduced below.
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`IPR2021-00686
`Patent 10,491,982 B2
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`
`
`Figure 2A illustrates one of the communication modes for the wireless
`earphone.
`
`Ex. 1001, 2:36–38. Figure 2A illustrates a data source 20 in
`communication with earphone 10 over ad hoc wireless network 24. Id. at
`4:33–37. The earphone has a transceiver circuit to communicate wirelessly
`with a data source. Id. at 4:35–37. The data source may be a digital audio
`player (DAP). Id. at 4:39–40. The DAP transmits audio wirelessly to
`earphone(s) via an ad hoc network if the DAP and earphone(s) are “in
`range” of that network. Id. at 4:63–65. “When in range, the data source 20
`may communicate with the earphone 10 via the ad hoc wireless network 24
`using any suitable wireless communication protocol, including Wi-Fi (e.g.,
`IEEE 802.lla/b/g/n), WiMAX (IEEE 802.16), Bluetooth” and other
`communication protocols. Id. at 4:63–5:1.
`D. Illustrative Claim
`Dependent claims 6–13 of the ’982 patent are challenged, all of
`which depend indirectly from claim 1. Pet. 1, 21–85. Claims 2–5 and 14–
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`IPR2021-00686
`Patent 10,491,982 B2
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`20 depend directly or indirectly from claim 1. All claims are directed to a
`“system.” Claim 1 is reproduced below as illustrative.
`[1.P]3 1. A system comprising:
`
`[1.a] headphones comprising a pair of first and second wireless
`earphones to be worn simultaneously by a user,
`
`
`[1.b] wherein the first and second earphones are separate such
`that when the headphones are worn by the user, the first
`and second earphones are not physically connected,
`
`a body portion that comprises:
`
`
`[1.c] wherein each of the first and second earphones
`comprises:
`
`[1.c.i]
`
`
`for
`[1.c.i.A] a wireless communication circuit
`receiving and transmitting wireless signals;
`
`
`[1.c.i.B] a processor circuit in communication with
`the wireless communication circuit; and
`
`[1.c.i.C] an ear canal portion that is inserted into an
`ear of the user when worn by the user; and
`
`[1.c.i.D] at least one acoustic transducer connected to
`the processor circuit; and
`
`
`[1.c.ii]
`
`an elongated portion4 that extends away from
`the body portion such that the elongated portion
`
`
`3 For purposes of this Decision, we follow Petitioner’s format where each
`claim is identified by claim number followed by a letter or combination of
`letters and Roman numerals for each limitation. See Pet. 32–53 (limitations
`[1.P]–[1.d]).
`4 Other than the claims, “elongated portion” does not appear in the
`Specification.
`
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`IPR2021-00686
`Patent 10,491,982 B2
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`
`extends downwardly when the ear canal portion
`is inserted in the ear of the user;
`
`
`[1.c.iii] a microphone connected to the processor circuit
`and for picking up utterances of a user of the
`headphones;
`
`
`[1.c.iv] an antenna connected
`communication circuit; and
`
`to
`
`the wireless
`
`a rechargeable power source; and
`
`
`[1.c.v]
`
`[1.d] a mobile, digital audio player that stores digital audio
`content and that comprises a wireless transceiver for
`transmitting digital audio content to the headphones via
`Bluetooth wireless communication links, such that each
`earphone receives and plays audio content received
`wirelessly via the Bluetooth wireless communication links
`from the mobile, digital audio player.
`
`
`Ex. 1001, 18:8–40.
`
`E. Evidence of Record
`This proceeding relies on the following prior art references and
`expert testimony:
`Rosener, US 2008/0076489 A1, published Mar. 27, 2008 (Ex.
`1004);
`Hankey, US 2008/166001 A1, published July 10, 2008 (Ex.
`1005);
`Dyer, US 8,031,900 B2, issued Oct. 4, 2001 (Ex. 1006);
`Hankey Provisional,5 US 60/879,177, filed Jan. 6, 2007 (Ex.
`1008);
`
`
`5 Hankey Provisional is a US provisional application related to Hankey.
`See Ex. 1005 at code (60).
`
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`IPR2021-00686
`Patent 10,491,982 B2
`
`
`Price, US 2006/0026304 A1, published Feb. 2, 2006 (Ex.
`1009); and
`Haupt, EP 2006/042749 A2, issued Apr. 27, 2006 (Ex. 1020,
`including English translation).
`Petitioner also relies on the Declaration of Dr. Jeremy Cooperstock
`(“Cooperstock Declaration,” Ex. 1003).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 6–13 would have been unpatentable on
`the following grounds (Pet. 1–2, 21–85):
`Claim(s)
`Challenged
`
`35 U.S.C. §6
`
`6, 8, 10 ,11
`
`7, 9, 12,13
`
`
`
`103
`
`103
`
`Reference(s)/Basis
`Rosener, Hankey, Haupt, Seshadri or
`Rosener, Hankey, Dyer, Haupt,
`Seshadri
`Rosener, Hankey, Haupt, Seshadri,
`Price or Rosener, Hankey, Dyer,
`Haupt, Seshadri, Price
`
`III. DISCRETIONARY DENIAL
`Institution of inter partes review is discretionary. See Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
`to deny a petition is a matter committed to the Patent Office’s
`discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”); 35 U.S.C. § 314(a).
`
`
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the application that resulted in the ’982 patent
`has an effective filing date before this date, the pre-AIA versions of §§ 102
`and 103 apply.
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`IPR2021-00686
`Patent 10,491,982 B2
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`
`Patent Owner alleges the advanced status of the District Court
`Lawsuit justifies discretionary denial. Prelim. Resp. 1–2. Both parties
`provided additional briefing on the Fintiv factors. See Prelim. Reply;
`Prelim. Sur-Reply. Petitioner also points out that Rosener was cited during
`prosecution, and addresses the issue thus raised under 35 U.S.C. § 325(d).
`Pet. 4–9. Both issues are addressed below.
`A. Discretion to Institute
`The Board has discretion not to institute trial. See 35 U.S.C.
`§§ 314(a) and 324(a) (each authorizing institution of a trial under particular
`circumstances, but not requiring institution under any circumstances);
`37 C.F.R. § 42.208(a) (stating “the Board will authorize the review to
`proceed on all of the challenged claims and on all grounds of
`unpatentability asserted for each claim.”); cf. Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
`petition is a matter committed to the Patent Office’s discretion.”);
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(explaining that under § 314(a), “the PTO is permitted, but never
`compelled, to institute a [inter partes review] proceeding”).
`Patent Owner argues that the Petition in this proceeding is a serial
`petition relative to the petition in the ’381 IPR and should be denied
`because it “frustrate[s] the purpose of the [AIA] as providing quick and cost
`effective alternatives to litigation.” Prelim. Resp. 3 (quoting General
`Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`19 (PTAB Sept. 6, 2017) (precedential)).
`The Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019), avail. at tpgnov.pdf (uspto.gov) (the “CTPG”), provides
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`IPR2021-00686
`Patent 10,491,982 B2
`
`guidance as to when multiple petitions challenging the same patent might
`be appropriate. For example, the CTPG advises applying the non-exclusive
`General Plastic factors “especially as to ‘follow-on’ petitions challenging
`the same patent as challenged previously in an IPR.” CTPG 56. This
`appears to be what Patent Owner refers to as “serial petitions challenging
`the same patent.” Prelim. Resp. 23.
`The CTPG also provides guidance on “Parallel Petitions Challenging
`the Same Patent,” namely, “[t]wo or more petitions filed against the same
`patent at or about the same time (e.g., before the first preliminary response
`by the patent owner).” CTPG 59. Here, Petitioner contends, and the record
`confirms, that it filed the Petition before receiving the preliminary response
`or the Institution Decision in the ’381 IPR. Pet. 11. The Petition was filed
`March 22, 2021, and the petition in the ’381 IPR was filed January 4, 2021.
`The question here is why a single petition was not sufficient and why it was
`necessary to file a second six weeks later?
`To that end, the CTPG states that “one petition should be sufficient to
`challenge the claims of a patent in most situations.” CTPG 59. Thus,
`“multiple petitions by a petitioner are not necessary in the vast majority of
`cases.” Id. “Two or more petitions filed against the same patent at or about
`the same time (e.g., before the first preliminary response by the patent
`owner) may place a substantial and unnecessary burden on the Board and
`the patent owner and could raise fairness, timing, and efficiency concerns.”
`Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that
`there may be circumstances in which more than one petition may be
`necessary, including, for example, when the patent owner has asserted a
`
`11
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`

`IPR2021-00686
`Patent 10,491,982 B2
`
`large number of claims in litigation,” although even then, granting two
`petitions “should be rare.” See id.
`If Petitioner “files two or more petitions,” it is authorized to file a
`separate paper ranking the petitions and providing “a succinct explanation
`of the differences between the petitions, [and] why the issues addressed by
`the differences are material.” CTPG 59–60. Petitioner filed such a Notice.
`Paper 3 (Petitioner’s Notice Ranking Petitions and Explaining Material
`Differences Between Petitions Against U.S. Patent No. 10,206,025)
`(“Notice”). Petitioner includes similar arguments in the Petition. Pet. 10–
`11. The Notice ranks the ’381 IPR petition first as Petitioner’s preference
`for consideration by the Board. Notice 1–2.
`As the Notice states, Petitioner filed two petitions challenging claims
`in the ’982 patent. Notice 1–2. The first petition, the ’381 IPR petition,
`challenges claims 1–5 and 14–20. ’381 IPR, Paper 1, 1–2. The Petition
`challenges the remaining claims 6–13 “based upon the disclosure of
`Seshadri,7 in addition to the prior art relied upon in IPR2021-00381.”
`Notice 2; see also Pet. 2–3, 30–31, 41–45, 69–71 (employing Seshadri (Ex.
`1022)).
`To justify filing two petitions challenging the ’982 patent, Petitioner
`argues that “[t]his case presents a prototypical case where ‘patent owner has
`asserted a large number of claims.’” and that Patent Owner “has taken no
`steps to narrow the dispute, and has instead asserted all 20 claims of the
`’982 patent against [Petitioner] in the co-pending litigation.” Notice 2
`
`
`7 The Petition also references Seshadri-818 (Ex. 1023) as part of the
`obviousness argument but not as part of a ground for unpatentability. Pet.
`2, 71.
`
`12
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`

`IPR2021-00686
`Patent 10,491,982 B2
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`(quoting CTPG 59). Petitioner argues that Patent Owner’s “unwillingness
`to narrow the claims asserted within the contentions leaves a quantum of
`claims–20–that . . . could not reasonably be addressed in a single petition in
`any event.” Pet. 10 (citing Ex. 1014 (Preliminary Infringement Contentions
`in the District Court case)). Petitioner argues that it filed the ’381 IPR
`petition “as quickly as possible” and “worked to furnish this petition as
`shortly thereafter.” Id.
`On its face, Petitioner’s contention that 20 claims is a quantum of
`claims that could not be addressed in a single petition strains credibility.
`The Board routinely receives petitions challenging more than 18 claims.
`Indeed, the basic filing fee for an inter partes review contemplates
`challenging up to 20 claims. See 37 C.F.R. § 42.15(a)(2)–(3). Petitioner
`provides no explanation, in either the Notice or the Petition, as to why,
`despite the small number of claims in the ’982 patent, this case is the rare
`case in which two petitions are necessary to challenge all of the patent’s
`claims. Rather, Petitioner simply states that 20 is too many and that it has
`any burden is “clearly the direct result of [Patent Owner’s] conduct in the
`co-pending litigation.” Notice 2–3; Pet. 11. We see nothing unusual in the
`complexity of the ’982 patent’s claims or the technology of the challenged
`patent and prior art that would distinguish this case from the “vast majority
`of cases” in which one petition is sufficient. CTPG 59. We agree with
`Patent Owner that “[t]he First Petition . . . could have easily challenged
`claims 6–13 in view of Seshadri[] and Seshadri-818.” Prelim. Resp. 24.
`Rather than distinguish this case from the typical case, Petitioner’s
`arguments actually reinforce that one petition should have been sufficient.
`Petitioner contends that the Petition addressed all claims except those
`
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`dependent claims that recite that “the headphones transition to play digital
`audio content received wirelessly from the second digital audio source via a
`second wireless communication link based on, at least in part, a signal
`strength for the second wireless communication link” (i.e., the “signal
`strength claims”).” Notice 2. In our examination of the record, the Petition
`adds to the ’381 IPR petition the analysis of claims 6 and 11, which depend
`respectively from claims 5 and 1, previously analyzed in the ’381 IPR.
`’381 IPR, Paper 1, 32–53 (claim 1), 66 (claim 5). Seshadri is included in
`the showing made for claims 6 and 11. Id. at 69–75 (claim 6), 75 (claim
`11). Claim 11 is similar to claim 6 and relies on the same showing. Claims
`7 and 8 depend from claim 6, claim 9 depends from claim 8 and claim 9
`depends from claim 10. Claim 12 depends from claim 11 and claim 13
`from claim 12. Thus, Petitioner’s argument is, essentially, that the Petition
`was necessary to address the “signal strength claim” limitation which
`specifically appears in claims 6 and 11. Notice 2; Pet. 10. As Petitioner
`states, “[g]iven the dependencies of the signal strength claims, . . . the
`primary difference between the first and second petitions is found in
`sections of the second petition that address the signal strength claims.”
`Notice 3. Petitioner has offered no persuasive reason why this “concise
`addition to deal with the 8 signal strength claims” could not have been
`presented alongside the 11 claims challenged in the ’381 IPR petition. Id.
`The Board already instituted trial based on the ’381 IPR petition,
`which Petitioner ranked first in its Notice for consideration by the Board.
`See Notice 1; ’381 IPR, Paper 15 (“’381 Inst. Dec”). As outlined above, the
`circumstances advanced by Petitioner here do not arise to a “rare” situation
`warranting two petitions. See CTPG 59. Conducting two trials under these
`
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`circumstances instead of one trial will “place a substantial and unnecessary
`burden on the Board and . . . [P]atent [O]wner and . . . raise fairness, timing,
`and efficiency concerns.” See id. (citing 35 U.S.C. § 316(b)).
`Based on the foregoing discussion, we exercise our discretion to deny
`institution based on the CTPG’s guidance on parallel petitions.
`Additionally, both parties address the applicability of the General
`Plastic factors to this case. Pet. 10–17; Prelim. Resp. 25–32. The analysis
`of these factors does not provide a persuasive reason to institute the follow-
`on or serial Petition (assuming we characterize the Petition as a serial,
`rather than a parallel petition given the six week gap between it and the
`’305 Petition).
`As to “whether the same petitioner previously filed a petition directed
`to the same claims of the same patent” (General Plastic factor 1), Petitioner
`argues that this petition challenges the “unpatentability of dependent claims
`6–13 (i.e., the ‘signal strength claims’). Pet. 10. Patent Owner concedes
`that this factor favors Petitioner, “the other factors favor denying
`institution.” Prelim. Resp. 25. However, claim 11 depends from claim 1,
`which was addressed in the ’381 IPR petition. Indeed, all aspects of the
`claims challenged in the Petition save the signal strength limitation of
`claims 6 and 11 were addressed fully in the ’381 IPR. Thus, this factor only
`marginally cuts against exercising our discretion to deny the Petition.
`As to “whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should have known
`of it” (General Plastic factor 2), Petitioner filed the ’381 IPR Petition on
`January 4, 2021. Petitioner is silent on when it became aware of Seshadri
`and Seshadri-818, or whether it knew about those references before filing.
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`Nevertheless, Petitioner’s stated reason for filing two petitions is that it
`could not challenge the large volume of asserted claims in one petition, not
`that it became aware of the prior art after filing the ’381 IPR petition. The
`implication is that Petitioner was ready to challenge those claims (and
`aware of the basis to do so) but for limitations on briefing space. As further
`evidence of Petitioner’s early knowledge of the prior art, Patent Owner
`argues that Petitioner was aware of Seshadri-818 and other references by
`the same inventor at least as early as January 2021, when Petitioner served
`invalidity contentions with those references in the District Court case.
`Prelim. Resp. 25 (citing Ex. 2023). Patent Owner further argues that
`Petitioner was aware of Seshadri at least as early as February 22, 2021,
`when it filed IPR2021-00546 advancing Seshadri as a reference. Id. at 26.
`Logically, Petitioner would have been aware of those references even
`earlier, as it would have spent significant time preparing its invalidity
`contentions and the Petition. In light of the evidence that Petitioner likely
`was aware of Seshadri before the filing of the Petition in March 2021, along
`with Petitioner’s silence as to its knowledge, this factor weighs against
`institution.
`As to “whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to institute review
`in the first petition” (General Plastic factor 3), Petitioner states that it “has
`received neither [Patent Owner’s] preliminary response, nor the Board’s
`decision to institute in IPR2021-00381.” Pet. 11. As noted above, the
`record supports this contention.
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`
`As to “the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing of the
`second petition” (General Plastic factor 4) and “whether the petitioner
`provides adequate explanation for the time elapsed between the filings of
`multiple petitions directed to the same claims of the same patent” (General
`Plastic factor 5), Petitioner argues that it “filed its first petition within four
`months of receiving [Patent Owner’s] extensive contentions.” Pet. 11.
`Petitioner contends that it “has judiciously worked to identify and frame for
`consideration the prior art offered to demonstrate unpatentability.” Id.
`However, as noted above, the Petition merely added a “concise” analysis of
`the “signal strength” limitation of claims 6 and 11 otherwise repeating the
`analysis presented in the ’381 IPR petition. Petitioner provides no
`persuasive reason why it waited an additional four months to file its second
`petition. These factors weigh in favor of exercising our discretion to deny
`the Petition.
`As to “the finite resources of the Board” (General Plastic factor 6)
`and “the requirement under 35 U.S.C. § 316(a) (11) to issue a final
`determination not later than 1 year after the date on which the Director
`notices institution of review” (General Plastic factor 7), the Board has
`stated that “the Board’s resources would be more fairly expended on initial
`petitions, rather than follow-on petitions.” General Plastic, Paper 19 at 10.
`Petitioner offers to modify the schedules of the ’381 IPR and this
`proceeding such that this proceeding is on essentially the same track as the
`’381 IPR. Pet. 11; Notice 3. Patent Owner responds that these proceedings
`could be consolidated, but that might jeopardize the Board meeting its one-
`year deadline for final written decisions. Prelim. Resp. 30. Although we
`
`17
`
`

`

`IPR2021-00686
`Patent 10,491,982 B2
`
`might be able to adjust schedules to minimize the waste of resources and
`added burden to the Board and Patent Owner, and to finish on time,
`Petitioner has not offered any credible justification for filing two petitions
`challenging the same patent or for its six week delay between those filings.
`These factors are, at best for Petitioner, neutral.
`Upon weighing the General Plastics factors, we see no persuasive
`reason to allow Petitioner to proceed on two petitions challenging the same
`patent. Petitioner provides no credible explanation for why it was
`necessary to file two petitions challenging the ’982 patent, given that the
`’982 patent only includes 20 claims. Nor did Petitioner explain
`persuasively why it was appropriate to wait just six weeks between petitions
`to concisely address a single claim limitation, especially when it was aware
`of Seshadri before the Petition was filed (and likely before the ’381 IPR
`petition was filed). The Board’s resources are better spent addressing the
`’381 IPR petition.
`On this additional basis, we exercise our discretion to deny the
`Petition.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is not instituted with respect to
`all grounds of unpatentability raised in the Petition.
`
`
`
`
`
`
`
`18
`
`

`

`IPR2021-00686
`Patent 10,491,982 B2
`
`FOR PETITIONER:
`
`W. Karl Renner
`Roberto Devoto
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`
`FOR PATENT OWNER:
`Mark G. Knedeisen
`Lauren Murray
`Brian Bozzo
`K&L GATES LLP
`mark.knedeisen@klgates.com
`lauren.murray@klgates.com
`brain.bozzo@klgates.com
`
`19
`
`

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